GRAFF V. BOESCH. GRAFF et al, v. BOESCH et cU. (Olrcuit Court,
279
No D. California. October 8, 1887.).:
1.
PATENTS FOR INVENTIONS-PATENTABILITy-INFRINGEMENT.
On the facts disclosed by the proofs, held; that the first claim onetters pat· ent No. 289,571, granted to Carl Schwintzer and William Graff for a lampbutner, shows a patentable invention, and is infringed by the lamp-burners . , sold by respondents. IN A FOREIGN COUNTRY. , .
:2. SAME-RIGHTS OF PURCHASER IN THE UNITED STATES FROM MANUFACTURER
Where an invention was patented in Germany, and subsequently plJ.tented in the United Stl\tes, and. under the German patent·laws a manllfacturer in Germany had a right to practice the invention in Germany, because he had made preparation to do so prior to the issue of the German patent. and for that reason the German patent was of no effect as against him. a purchaser in the United States, purchasing from such manufacturer in Germany, has no - right to sell the articles in the course of trade in the United States without licens6from the owner of the United States patent. {8yllab'U8 oy the Court.)
In Equity. Bill for infringement of patent·. Langlwrne Miller, for complainantei. Scri'lYYl.e1' Boone,for respondents. SAWYER, J., (oraUy.) I have carefully examined this case. lam not satisfied that the first c1aimdoes not cover a patentable invention. It is a combination. The Gerniancourt, which had it under consideraUon, ,evidently held it to be a patentable invention.. It was also Of the opinion that the defendants'instrument is an infringement, and sO'am I. At all events, I am not satisfied that it is not a patentable invention. 'The patent itself is prima fa&ie evidence on this, point which is not satisfactorilyoverthrown. It is claimed, horever, because a man by the name of Heoht has a right to manufacture this invention .in Germany, that these articles which the defendant brought here, having been pur.ehased in Germany of him who had a right to manufacture them, the purchaser can lawfully import and sell them here. I do, not think that be done. I do'not think the case is at all within the range of ,any ·of the cases cited. In fact the first case cited by the defendant is directly the other way. The case that has gone further than any of them is Adams v. Burke; 17 Wall. 453, decided by the supreme court, where the patentee holding an American patent has himself sold his right to a partieular district; free from any restrictions whatever. It was held that a purchaser from an assignee within the district, to which the right was -sold, of an article manufactured in the district, was authorized to use the article in any district. But the decision was carefully limited. to the use. Nothing was said as to the right to sell the article outside the district. The case of McKay v. Wooster,2 Sawy. 373, cited from the decisions -of this court, does not go so far as seems to be generally supposed, because :that is limited, 80 far as the facts and the decision go, to the case where
280
FEDERAL REPORTER.
a patentee had sold a limited territory while owning the whole, without any limitation or restriction whatever, so that the assignee could make and sell within that territory without limitation or restriction, to be used A subsequent assignee of another anywhere, as the patentee could district, could not obtain any more than the patentee had at the time of the latter assignment. The. patentee could have sold the right to use anywhere in the United States at the time of the first partial assignment. He did not put in the assignment anylimitation, or restriction, as to sales within the district assigned. The next purchaser, who takes another portion of territory, takes subject to that right before assigned, which counsel do not seem to have noticed. The purchase of California in that case was a subsequent purchase of territory with this limitation upon it. The first patent for the invention involved in this case is not an American patent at all. It is a German patent. Hecht, the man who has a right to manufacture in Germany, did not get his right from the patentee. He does not claim under the plttent. , Under the laws of Germany, when a patent is issued, if another man has made a machine of the kind patented, or is prepared to make it, before the patent issues, the patentee has no right as against him. "That was the position of Hecht, who manufactured in Germany the infringed articles now in question, and sold them to the party who imported them from Germany and sold them here. At the time that patent was issued, or applied for, Hecht haq already made the patenteda.rticle, or got machinery ready for making it. That, under the German law, took it out of the patent as to him, so that, although the patentee had a right, in Germany, as against anybody else, he had no right as against Hecht. Hecht did not get his right. from the patentee at all. He got it wholly independent of him, so that, even if the same invention is patented in this country, he got no right from the patentee in either country. Hecht simply got such right as the German patent law gave him., If these parties here can buy of anybody else who can lawfully manufacture the maohine in Germany without the consent of the patentee, then all that is necessary to do to defeat or avoid an American patent, is to step over the line into Mexico or Canada, where not reach, and manufacture and stock the market in the the patent UnitedStates by importation which can be done without any authority from the patentee. This is an American patent. The complainants claim under it. They have purchased it, and no one else has got any right from the patentee in this country. I hold that parties who sell in the United States the patented articles manufactured in other countries, where the invention is not protected by a patent, are infringers. I, therefore, find in favor of the complainants on the first claim of the patent. It will be referred to the master to ascertain the profits and damages.
HUNTINGTON fl. BARTFORD UEEL-PLATE 00.
281
HUNTINGTON tI. HARTFORD HEEL-PLATE
Co.
(Oirc'Uit OOUf'e, D. Oonnectic'Ut.
November 25, 1887.)
PATENTS FOR INVENTIONS-lNF'RINGEMENT-HEEL-PLATES FOR RUBBERS.
B.
In letters patent No. 296,623, of April 8, 1884, to Frederick Richardson, for a die for securing heel-plates to rubber shoes. the invention is limited to the radially-placed inclined planes, which serves to curve and clinch the ends of the prongs, and which, owing to the peculiarity of the prongs, viz., studs have ing large bases to serve as plugs and flattened ends. are well adapted for the purpose. In the Richards heel-plate, (letters patent No. 369,554, of September 6,1887, to Francis H. Richards. for a machine for attaching heel· from a common cen· plates,) the two extreme elevations are in lines ter, the two corresponding prongs are curved by means of the inclines in the same. direction in which the Richardson end prongs are curved, andtlle ends of the prongs are first curved. Held, as to such elevations, an infringement. Letters patent No. 296,624 of April 8, 1884. to FrederiCk Richardson, for a machine for securing heel-plates to rubbershoes, considfJred, and held not infringe'd by letters patent No. 869,554, of September 6, 1887, to FrancisH. Rich· ards, for a machine for attaching heel-plates, the pecuiiar parts of the Rich· ardson machine beinll: the holder or guide and the mechanism connected therewith. and neither the platen nor the clamp nor the spring in the Richards rna· dnne,nor the three in combination, being equivalent thereto. On motion for preliminary injunction. ,
SAME.
In Equity.
Wm. Edgar Si:nwnd8, for plaintiff. Oharles E. Mitchell, for defendant.
SHIPMAN, J. This is a motion for a preliminary injunction against the alleged infringement of two letters patent, No. 296,623 for a die for securing heel-plates to rubber shoes, and No. 296,624 for a machine for securing such plates to such shoes, each granted to Frederick Richardson, April 8, 1884. The patentee described the object and general character of the invention claimed in No. 296,623 as follows: "This invention has reference to an improvement in the dies which are placed into rubber shoes for the purpose of bending and clinching the nails or pins by which metallic wearing-pieces are secured to the rubber shoes; and it consists in the peculiar and novel construction of the die for bending the nails or pins, and also the die for clinching the same, as will be more fully set forth hereinafter. In rUbber shoes, and particularly in rubber overshoes, the rear portion of the heel is SUbjected to more wear than any other portion of the shoe, and when worn admits water to the interior of the shoe; This portion is therefore usually protected bysome metallic plate or wearing surface, which reqUires tn be firmly secured by clinching the nails or pins; and to do this more effectually, so all to prevent the tearing of the rubber and also prevent leakage, is the object of this invention. When nails or pins are driven through the heel of a rubber shoe against the ordinary iron last, the nails are liable to bend near the heel-plate and tear the material, thus making a rent through which water may enter the shoe, and this makes the overshoe practically useless. I form the die so that the drst operation will be to curve the ends of the pins or nails without bending the portion in the material of the beel, and the continuation of the pressure exerted on the heel-plate will clinch the pins or nails, and so compress the material around the shanks of the pins or nails that no water can enter the shoe."